Last year’s Alice Corporation Pty. Ltd. v. CLS Bank International decision from the Supreme Court of the United States grabbed headlines for being a blow to the patentability of software. Alice reiterated that abstract ideas, laws of nature, and natural phenomenon remain patent ineligible unless there is “something more” that transforms otherwise ineligible subject matter to eligible subject matter. Even when the United States Patent and Trademark Office (USPTO) released guidelines on patentability that established that software remains patentable, some still questioned the strength and validity of software patents.

On May 22, 2015, the United States Court of Appeals of the Federal Circuit specifically addressed validity of a software patent in Allvoice Developments US, LLC v. Microsoft Corp.. In Allvoice, the appellant and patent owner of U.S. Patent No. 5,799,273 (the ‘273 patent) appealed a ruling of invalidity against claims 60-68 of the ‘273 patent. In finding that those claims were ineligible for patent protection, the Federal Circuit provided guidance on when software is patent eligible.

To be eligible for patent protection, claims must be directed to one of four categories of inventions. 35 U.S.C. §101 defines these categories as:

Processes

Machines

Manufactures

Compositions of matter

Meeting one of these categories is a perquisite to patentability. Claims falling outside of these categories are necessarily not protectable by patents and there is no need to perform an Alice analysis. An Alice analysis is only considered once the court determines that the claims fit in one of these categories.

Once a claim is identified as being a process, machine, manufacture, or composition of matter, a court will determined whether it is directed towards an abstract idea, laws of nature, or natural phenomenon. If the claim is directed towards an abstract idea, laws of nature, or natural phenomenon, then the court determines whether it adds “something more,” as described in Alice.

In Allvoice, the claims in question recite an “interface application program” that allows a user to use the program with any text processing program. This program provides various text-recognition and speech-recognition functions independent from the text processing program. The patent owner first argued that any claimed “means” were directed only towards software. The patent owner later argued that claims were directed towards computer readable instructions. It then argued that “computer readable” implicitly requires that the instructions are embodied in a tangible form like computer memory.

The Federal Circuit disagreed and refused to read-in limitations, whether implicit or not, to the claims. In doing so, it held that the claims did not recite any process, machine, or manufacture. Because the claims fail to fall in one of the enumerated categories, an Alice type analysis was not necessary. The Federal Circuit, however, confirmed that software may be patent eligible when it is directed towards a process or is in a tangible form. If directed towards one of these categories, the claims would then be analyzed to determine if they were directed to an abstract idea without adding “something more.”

TAKEAWAYS

Allvoice establishes that patent protection is indeed available for software related inventions. Claims for these types of inventions, however, must be explicitly directed towards one of the enumerated categories.

Alice, however, holds that even if directed towards a patent eligible category, a software patent claim may nonetheless be patent ineligible if it merely recites an abstract idea (without anything more) embodied as a process, machine, or manufacture.

Patent drafters and litigators alike should understand the continually evolving nuances of patent law with regards to software related inventions. A firm grasp of these nuances may be the difference between validity and invalidity.